Judge Cole denied defendant and counter-plaintiff Fujitsu’s motion for a protective order prohibiting plaintiff and counter-defendant Tellabs from getting discovery regarding Fujitsu’s inspection of Tellabs’ optical scanner in this patent litigation regarding optical amplifiers. Fujitsu argued that the inspection was conducted by its employees specifically in anticipation of litigation and, therefore, was work product because the employees would not be testifying at trial. The issue before the Court was whether an employee could be “specially employed . . . in anticipation of litigation” pursuant to Fed. R. Civ. P 26(b)(4)(D).

The district courts were split on the answer. The Court noted that had the Rule been intended to expressly exclude a party’s employees, it would likely have required that the individual be “specially retained” instead of “specially employed.” The Advisory Committee Note was also instructive, if not conclusive, in excluding generally employees not “specially employed on the case.” If the Advisory Committee intended to exclude general employees, it could have excluded all general employees in the Note.

Having determined that the Fujitsu employees could be protected by Rule 26(b)(4)(D) as specially employed, the Court turned to the facts of the case. But Fujitsu had not met its burden to show that its analysis was done in anticipation of litigation, for at least the following reasons:

The evidence showed competition issues, not an expectation or anticipation of litigation at the time of the analysis.

The “primary motivating purpose” behind the investigation was not litigation, but at least include competitive concerns. The fact that the reasons may have later “morphed” into litigation was not relevant.

The Court also commended both sides and their counsel for rarely presenting discovery disputes to the Court.

R. David Donoghue is a patent trial attorney and partner with Holland & Knight’s Intellectual Property Group in Chicago. A trusted counselor to his retail and supply chain clients, Dave routinely speaks to groups of all sizes on an array of intellectual property topics. Chicago IP Litigation was created to help businesses understand their intellectual property rights and how to drive their cases to positive resolution.

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